Beware the pitfalls of provisional patents

By John F O'Rourke and Trevor Roberts
*This article was first published in Inside Counsel Magazine on November 11, 2015. Read it here

Man Sitting

Myths and Misperceptions

An increasing number of people are apparently under the impression that a provisional patent is a kind of quick and dirty substitute for a non-provisional application, but such a belief can be fatal to one's ability to later obtain and/or enforce one's patent.

Entrepreneurs and inventors must understand that the idea of a "provisional patent" is an urban legend - there is simply no such thing. There is only a provisional patent application. The need to fully describe the invention is the same for a provisional application as it is for a nonprovisional application.

A provisional application should merely be viewed as a placeholder - an optional preliminary step that can be taken to extend the overall period of patent protection. It should not be treated as a shortcut to obtaining a full patent.

Background

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent as a lower-cost first patent filing in order to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

This application is filed with the USPTO under 35 U.S.C. §111(b), and it provides a means of establishing an early effective filing date for the later-filed nonprovisional patent application. It also allows the term "Patent Pending" to be applied when describing the invention.

However, a provisional patent application has a pendency that only lasts 12 months. A corresponding nonprovisional application must be filed during this pendency period. Otherwise, filing a provisional application provides no benefit to the inventor.

The Risk

What tends to entice inventors is the lower costs associated with a provisional application - especially if one files without hiring a qualified IP attorney - and the fact that such an application does not have many of the formality requirements of a nonprovisional patent application.

For example, a provisional application does not require a prior art statement, formal patent claim, or an oath or declaration since the application is not examined. But these apparent "benefits" may ultimately do more harm than good.

Because the filing requirements are so relaxed, one may not exercise the same degree of care as they would if they were filing a nonprovisional patent. And this is what can cause the inventor a great deal of grief later on when it comes time to obtain or enforce their patent.

For while it is true that a provisional application is typically not examined, it may be reviewed to ensure that it provides a written description and an enabling disclosure that supports the claims of the later-filed non-provisional patent.

The Dynamic Drinkware Case

Despite the lessened formalities, a provisional application must still satisfy the requirements of 35 U.S.C. 112, para. 1 with respect to claims that will be written up to one year later, and this is only possible if the provisional application meets the written description and enablement standards from the start.

In Dynamic Drinkware, LLC v. National Graphics the U.S. Court of Appeals for the Federal Circuit found that if the earlier filing date of the provisional is necessary - such as in the case of an interference or to overcome a reference - the provisional application must adequately provide:

(1) a written description of the subject matter of the claim(s) at issue in the later filed nonprovisional application, and

(2) an enabling disclosure to permit one of ordinary skill in the art to make and use the claimed invention in the later filed nonprovisional application without undue experimentation."

Thus, the Federal Circuit held in this case that a reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.

So, even though one is not required to write claims for a provisional application, one must ensure that any future claims of the nonprovisional patent would be "covered" by the provisional. As the Federal Circuit further explained:

"A provisional application's effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional."

Material added to the application for the nonprovisional patent, after the provisional is filed, may give rise to claims not covered by the provisional. Therefore, the later-filed utility patent may not be entitled to the provisional application's priority date.

Conclusion

Those who use provisional patent applications as a cheap and easy shortcut risk potential liability from future unknown claims of the later nonprovisional patent. A provisional application description must be afforded the same attention and degree of care as a non-provisional application if it is to provide any real benefit.

If you really want to protect your invention, do it the right way. Work with a registered patent attorney who can help you avoid making mistakes that can come back to haunt you later.